Do you know the Difference? (Photo Credit: Photo by Emily Morter on Unsplash)

What is the Difference Between a "Knock Out" Search and a "Full" or "Comprehensive" Search for my Trademark?

You have decided to take the very important step of applying for a federal trademark application at the USPTO to protect your valuable Brand.  Congratulations!  While searching what the steps are to file an application, you have no doubt seen references to a "Knock Out" style search as well as a "Comprehensive Search" or "Full Search." You likely have questions - what is the difference?  More importantly - "Do I really NEED one...or both?" This article is intended to help you determine the answers to these questions.  As a starting point, both types of searches are completely optional.  While the USPTO does not require either search prior to filing an application for a trademark, it is always a good idea to do a search, as that can help determine whether you will encounter problems with prior filed trademarks that could derail your application.  Thus, choosing to do a search before filing can help you avoid future headaches and costs, as well as maximize the chances of a successful application process.  But that still doesn't answer the question - which type of search is best for you?

Here is a break-down of the options.  (the ultimate decision is for you to make, after understanding these options)

Why a Prior Search is Recommended?

The existence of a prior filed application or regisistered trademark that is similar enough to your own (it does not need to be 100% identical) for a similar enough good/service (again - it does not need to be 100% identical), can cause your application to be refused on the basis of a conflict of interest.  Likewise, it may cause the owner of the prior filed application or registered trademark to oppose your registration and/or take action to prevent you from using your mark, if they believe it infringes on their own rights. Given that the USPTO trademark application process is taking over a year from application to a decision, this could mean that you may have to re-brand after you have already gotten up and running under a brand name (something that you could have discovered earlier with a proper search).

By identifying potential conflicts early, you can avoid wasting time, application fees, and dealing with rejections or disputes later in the process.  Most importantly, if you do have to rebrand becuase of an existing conflict, you can do it early enough, before you have invested alot of time, effort and resources in launching and gaining noteriety and goodwill.

Which Search is Best for Me?

Both a "Knock Out" search, and a "Comprehensive/Full" search involve added costs.  If you are using a trademark attorney to assist in the process, typically you will choose one or the other (ie. you need not pay for both seperately, as the "Knock Out" search is included in a "Comprehensive/Full" search).  Understanding the differences, will help for you to determine which is appropriate for your circumstances, based on your budget, and your concerns, as well as your risk aversion strategy.

Understanding What a "Knock Out" Search Entails

A "Knock Out" style search is the most basic preliminary search before filing for a USPTO trademark application.  By virtue of that fact, it is typically also the less expensive of the two options.  Most importantly, a "Knock Out" style search can only be undertaken fully by a licensed attorney (as non-lawyers cannot provide legal advice based upon the results).  Many "Do it Yourself" sites may offer a seemingly cheap alternative, but they are neither trained nor legally authorized to provide you actionable legal advice.  Only a licensed trademark attorney can provide you with advice.

To perform a "Knock Out" style search, a trademark attorney will conduct a limited and relatively quick search confined to the entires at the USPTO (ie. Federal pending applications and registrations).  The goal of a "Knock Out" search is to identify any obvious pre-existing conflicts or problems with your potential new trademark before you spend the money to file an application.  Such a search will be limited to finding out if there is/are any exact match(es) already registered at the USPTO that are identical to your proposed trademark, and whether such match(es) pertain to the same or similar goods/services as you want to protect.  If such a match meeting that criteria is found, the trademark attorney will know that you do not have a chance of success and will tell you that you should pick a new trademark (hence why it is called "Knock Out").  

The Benefits of a "Knock Out" Search

The primary benefits of a "Knock Out" search are readily apparent:

• It is rather quick
• It is rather cheap (Trademark attorneys typically charge a flat fee for such a search)
• It will help identify and red flags (ie. pre-exisiting USPTO trademark registrations which would "knock out" your chosen trademark under likelihood of confusion standards)
• It allows you to determine the feasibility of your trademark before you file (and before you incur non-refundable filing fees)

Due to these foregoing benefits, it is considered best practice (though still optional) to at the very least have such a "Knock Out" search performed before you file a trademark application at the USPTO.

The Limitations of a "Knock Out" Search

While a helpful, and cost-efective option, such a search does have certain limitations.  These limitations include:

• Such a search will not account for similar federal trademarks.  Per the examination rules and procedures applicable to the USPTO, a pre-existing application or trademark registration need not be 100% identical to your trademark to pose a problem or conflict, under "likelihood of confusion" analysis standards.
• Such a search will not account for similar state trademarks.  Each state in the United States has jurisdiction over state trademarks in use within that state.  Someone with a state trademark that is similar (in terms of the mark, and in terms of the goods/services covered) may be inclined to file an opposition of your federal application to protect their rights. While this conflict would not be raised by the USPTO during examination, it could arise after your application is published for opposition.
• Such a search will not account for similar common-law usage.  In the US, trademark rights are gained by first use in commerce.  Owners of unregistered trademarks have rights of use dating to when they first used the mark, and covering the geographic area they currently service or sell within.  Again, while this conflict would not be raised by the USPTO during examination, it could arise after your application is published for opposition.

Thus, while a "Knock Out" search is a good first step, it does not identify all potential risks of conflict. The gaps, as to similar federal, state, and/or common-law trademarks can still lead to problems and headaches for you later in the process.

Understanding What a "Comprehensive" or "Full" Search Entails

The first step of a "Comprehensive" or "Full" search begins with the same "Knock Out" search procedures outlined above (the term "Full" and "Comprehensive" can be used interchangeably for the same search).  Beyond that, an additional search is performed to address similar Federal, state and or common-law trademark uses for similar goods/services.  Because of the expanded scope, more work is required, and as a result, this type of search is more expensive and takes more time.  

Experienced trademark attorneys will typically order search data as to similar Federal, state, or common-law trademarks from a reputable vendor specializing in such searches.  This is because these companies can return results faster than the trademark attorney, and at a lesser cost than if the trademark attorney is performing the search (at their hourly fee).  When the raw search data report is received from the vendor, an experienced trademark attorney will analyze these results and perform additional chekcs, utilizing the same methodology that an examiner would utilize at the USPTO.  The trademark attorney will then prepare a legal opinion letter (called a "Clearance Opinion") to report their findings and identify any risks posed by existing trademark registrations or prior common-law trademark usages, as well as any strategies or arguments that could be applied to overcome these risks of conflict.  For more information on "Clearance Opinions" see our blog article on Clearance Opinons- https://www.iveticlaw.com/what-exactly-is-a-trademark-clearance-opinion-and-do-you-need-one 

Ultimately the choice of whether to proceed with filing an application will be up to the individual client, but the goal is for the trademark attorney to offer information and advice so that the client can make a fully informed decision (and be prepared for any potential hurdles that may arise down the road from the risks identified). 

Again, this type of search can only be undertaken fully and provided by a licensed attorney, becuase the Clearance Opinion consists of legal advice and consultation.  Trademark Attorneys who utilize outside search vendors will typically offer their services on a flat fee basis. 

Given the obvious benefits of conducting such a search and analysis before filing an application for your trademark, it is a very good option (especially if you want to try and identify all risks and maximize the chances for a successful application).

The main drawback of such a search - it takes time and costs more money (than either doing no search, or limiting the search to the "Knock Out" component).  Again, when you consider the potential pitfalls of filng an application and only finding out several months to a year later that a conflcit with another trademark may prevent you from attaining registration (or using your chosen mark) - the cost and time are well worth it.

What Role does a Trademark Attorney Play in Either Search

As indicated, a trademark attorney serves a valuable role in both types of searches.  While "Do it Yourself" websites may offer to do a "Knock Out" - they cannot provide legal advice nor consult you on the meaning of the results they identify.  Only a lawyer can do so.  Likewise, only a tradmark attorney can provide the full benefit of a "Comprehensive" or "Full" search, identifying strategies and risks uncovered by the search.

Employing an experienced trademark attorney to assist you with a "Comprehensive" or "Full" search helps to minimize the chances of being surprised with a office action refusal and/or conflict.  In this way, you are able to make a fully informed filing decision (and, if necessary, can begin preparing for any eventual conflict or opposition in advance, rather than during the limited time for the same down the road).

The choice of which type of search is right for you will depend on two factors - your budget, and your level of risk aversion. 

Final Thoughts - Building a Strong Trademark Strategy

Both "Knock Out" and "Comprehensive/Full" searches play valuable roles in the trademark application and registration process. While a "Knock Out" search provides a basic and budget-friendly starting point, a "Comprehensive" or "Full" search (together with a Clearance Opinion prepared by an experienced trademark attorney) offers the detailed insights and legal analysis needed for long-term brand protection.

When in doubt, consulting with a trademark attorney is always a smart move. Their expertise ensures your application is built on a strong foundation, helping you secure the trademark that plays a vital role in your business success.

If you're ready to take the next step toward trademark registration or have questions about which search is right for you, contact us today. Our experience trademark attorney can guide you through the process and ensure you're set up for success.

Remember, your initial consultation call is free!  

Contact us for a Free Consultation on your Trademark matter!